On June 13, 2024, the United States Supreme Court delivered a unanimous decision in Vidal v. Elster, holding that the First Amendment right to free speech does not circumvent the Names Clause (section 2(c)) of the Lanham Act, which prohibits trademark registration of a living person’s name without their written consent. The case stemmed from political activist Steve Elster’s attempt to trademark the phrase “TRUMP TOO SMALL” for clothing, intended as critical political commentary on former President Donald Trump. Upon the United States Patent and Trademark Office’s (USPTO) denial of registration for this mark on under the Names Clause, Mr. Elster challenged the Names Clause as an unconstitutional prohibition on the First Amendment right to free speech. All nine Supreme Court justices affirmed that the Names Clause remains constitutional and allowed the USPTO to continue to enforce the provision when reviewing trademark applications.
Initially, the U.S. Court of Appeals for the Federal Circuit found Mr. Elster’s First Amendment claims against the Names Clause to be compelling, and overturned the USPTO’s decision. The Federal Circuit’s rationale was that the Names Clause is technically a “content-based” speech restriction because it prohibits trademark applications from using a living person’s name without his content. Content-based speech restrictions are constitutional only if the government proves that they are narrowly tailored to serve compelling state interests. The Federal Circuit ruled that the Names Clause did not advance a substantial government interest and was therefore unconstitutional.
The Supreme Court’s Reasoning: History and Tradition Win Out
The Supreme Court, however, disagreed. The majority opinion, authored by Justice Clarence Thomas, relied on the “history and tradition” test, finding that there is a long-standing tradition of protecting personal names from being trademarked without permission that overrides Mr. Elster’s First Amendment claim. Justice Thomas explained that trademarks inherently involve content distinctions and that there is a difference between the Names Clause and free speech restrictions based on specific viewpoints, which target speakers of a subject and are thus a clearer violation of free speech rights. Under Names Clause, it does not matter whether the trademark uses a person’s name in a positive, negative, or neutral way – it still can’t be registered without their permission. This, along with the long history of similar laws, convinced the Court that this restriction is legal.
Instead of setting a new rule for future cases, the Court relied heavily on past legal practices dating back to England. Under those laws, using another person’s name to sell products could be considered fraud. This tradition continued in the United States, and by 1911, federal law allowed trademarks with names, but only if they belonged to the person applying for the trademark. The Names Clause does not violate the First Amendment because it serves a substantial government interest – protecting individuals from having their names misappropriated for commercial gain.
Ramifications for the IP Sector
The Court’s decision in Vidal v. Elster decision has notable potential ramifications for the IP sector. First, the decision reaffirms the importance of protecting personal names within the realm of trademark law. Individuals now have a clearer legal shield against unauthorized commercial use of their names in an era where social media and online commerce has blurred the lines between commercial and non-commercial uses of names. Second, it clarifies that although the Names Clause regulates the content of a trademark, it is viewpoint-neutral and does not infringe upon the right to free speech as enshrined by the First Amendment. Ultimately, he Court’s decision does not prohibit Mr. Elster from continuing to sell the “Trump Too Small” shirts online, only that the phrase is not eligible for trademark registration.